Christian Louboutin (ÂLouboutinÂ) first launched his iconic Âred bottom shoes in 1993. Since that time, these shoes with their red coloured soles have become synonymous with wealth, luxury and celebrity lifestyle. Consequently, when the Dutch retailer Van Haren launched a shoe design for women with red-soles, Louboutin sought legal action to prevent any public confusion over which brand owned the rights to the Âbloody shoesÂ.Â
The Hague District Court found that Van Haren had infringed the trade mark of Louboutin in relation to the distinctive red-soled shoes. In addition, Van HarenÂs bid to have LouboutinÂs Benelux trade mark registration invalidated was rejected.
The main issue was whether Van HarenÂs red-soled high-heeled shoes would cause a likelihood of confusion with LouboutinÂs products, in turn leaving the public unsure as to the origin of Van HarenÂs shoes.
In 2016, the Dutch court referred the case to the Court of Justice for the European Union (CJEU) for consideration. The CJEU offered some clarification on whether Benelux IP law prevented the shape of LouboutinÂs red-soles from being registered. In reaching its decision, the CJEU reviewed article 3(1) (e) (iii)Â of the Directive 2008/95/EC (now obsolete). It stated that if it is only the shape of a product Âwhich gives substantial value to the goodsÂ, then the mark can be invalidated. However, the new EU Directive (2015/2436), has broadened the scope in relation to the invalidations of registered trade marks.
Nevertheless, as the EU Directive (2015/2436) was not yet transposed into Benelux law, it could not be considered in this case. Subsequently, the CJEU decided that LouboutinÂs trade mark was distinctive and ordered Van Haren to cease using the infringing trade mark (red-soles). The CJEU awarded costs and damages to Louboutin.
